Technology Law Source : Technology Lawyers & Attorneys for Patents, Trademarks & Copyright Issues in Ohio, Washington DC, Florida

Under a recent U.S. Supreme Court ruling, publishers of books and magazines who print and sell their publications in other countries through distributors will no longer be able to rely on U.S. copyright law to prevent others from importing and re-selling those publications in the U.S. In Kirtsaeng v. John Wiley & Sons, Inc.¹, the U.S. Supreme Court fully embraced international copyright exhaustion. Going against the views (admittedly dicta) expressed in its own unanimous decision from 1998, as well as the official position of the United States in international trade negotiations, the court held that the first sale doctrine applies to copyrighted works manufactured and sold abroad under the authority of the copyright owner. Such authorized manufacture and sale, even if done outside of the U.S., exhausts the copyright owner's right to control the importation and distribution (i.e., sale) of such works.

As a result of Kirtsaeng, copyright owners will find it difficult to prevent the unauthorized importation of their works purchased in other countries (assuming, of course, that those works were made and sold abroad with the approval of the copyright owner). Though Kirtsaeng was limited to copyright, the majority opinion suggests that the Court may be willing to embrace international patent exhaustion as well.

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Co-Authored By: Robert J. Morgan

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Think recovery of attorneys' fees in copyright infringement cases is just for plaintiffs? Think again. Plaintiffs' counsel should take heed of the chilling tale in Fharmacy Records v. Salaam Nassar, Nos. 10-1354, 10-2073, 2012 WL 573942 (6th Cir. Feb. 23, 2012), discussed below. But first, some background. In Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), the Supreme Court explained that awards of fees to prevailing parties in copyright cases are discretionary and with respect to liability for them, copyright plaintiffs and defendants are to be held to the same standards. Since then, there have been scores of copyright cases in which courts have awarded fees. In most, it is the plaintiffs who have recovered. See, e.g., Balsley v. LFP, Inc., Case No. 1:08 CV 491, 2011 WL 1303738, **5-7 (N.D. Ohio March 31, 2011) (plaintiff prevailed but awarded only 40% of fees; thorough analysis of fee award). But on occasion, a defendant will win its fees. See, e.g., Chambers v. Ingram Book Co., Case No. 09-14731, 2012 WL 933237, **3-7 (E.D. Mich. March 20, 2012) (court awarded prevailing defendants just shy of $75,000 in attorneys fees). Whether intended or not, the principles governing Rule 11 are regularly applied when the issue is whether defendants should recover fees. See id. (in awarding fees, court found the lawsuit frivolous and motivations behind the filing of it highly questionable).

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The Sixth Circuit recently issued a rare decision addressing ownership of renewal copyrights - in some of country singer Roger Miller's songs: Roger Miller Music, Inc. v. Sony/ATV Publishing, LLC, Case No. 10-5363, 2012 WL 555485 (6th Cir. Feb. 22, 2012). It is worth a read if you have occasion to wrestle with renewal copyright issues.

Renewal copyrights are unquestionably tedious business. Not long ago we handled a case involving issues of renewal copyrights dating from Germany prior to World War II. See Cambridge Literary Properties, Ltd v. W. Goebel Porzellanfabrik G.m.b.H. & Co. KG.,510 F.3d 77 (1st Cir. 2007), cert. denied, 129 S.Ct. 58 (2008). The case took sixty-five years to bring and eight years to resolve!

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The Digital Millennium Copyright Act (DMCA) at 17 U.S.C. §1201(a) prohibits the circumvention of technological protection measures used by copyright owners to prevent copying. However, subsection (a)(1)(C) allows the United States Copyright Office every three years to exempt certain classes of copyrighted works from the circumvention prohibition if the prohibition is likely to adversely affect users in their ability to make noninfringing uses of those particular classes of works.

The Librarian of Congress, James H. Billington, on July 26 announced six new or more specifically defined classes of works to be exempted from the DMCA’s prohibition against circumvention of access-control technologies. “Persons who circumvent access controls in order to engage in noninfringing uses of works in these six classes will not be subject to the statutory prohibition against circumvention,” Billington said.

The six classes of works are:

(1) Motion pictures on DVDs that are lawfully made and acquired and that are protected by a content scrambling system when circumvention is accomplished solely in order to accomplish the incorporation of short portions of motion pictures into new works for the purpose of criticism or comment, and where the person engaging in circumvention believes and has reasonable grounds for believing that circumvention is necessary to fulfill the purpose of the use in the following instances: (i) educational uses by college and university professors and by college and university film and media studies students; (ii) documentary filmmaking; and (iii) noncommercial videos

(2) Computer programs that enable wireless telephone handsets to execute software applications, where circumvention is accomplished for the sole purpose of enabling interoperability of such applications, when they have been lawfully obtained, with computer programs on the telephone handset.

(3) Computer programs, in the form of firmware or software, that enable used wireless telephone handsets to connect to a wireless telecommunications network, when circumvention is initiated by the owner of the copy of the computer program solely in order to connect to a wireless telecommunications network and access to the network is authorized by the operator of the network.

(4) Video games accessible on personal computers and protected by technological protection measures that control access to lawfully obtained works, when circumvention is accomplished solely for the purpose of good faith testing for, investigating, or correcting security flaws or vulnerabilities, if: (i) the information derived from the security testing is used primarily to promote the security of the owner or operator of a computer, computer system, or computer network; and (ii) the information derived from the security testing is used or maintained in a manner that does not facilitate copyright infringement or a violation of applicable law.

(5) Computer programs protected by dongles [Wikipedia explanation here] that prevent access due to malfunction or damage and which are obsolete. A dongle shall be considered obsolete if it is no longer manufactured or if a replacement or repair is no longer reasonably available in the commercial marketplace; and

(6) Literary works distributed in e-book format when all existing e-book editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling either of the book's read-aloud function or of screen readers that render the text into a specialized format.

It is the second of the above classes which removes copyright law prohibitions against “jailbreaking”, so long as the jailbreaking is done for the purpose of engaging in noninfringing uses. Jailbreaking is a process that allows iPhone users to run third-party code on their devices by unlocking the operating system and allowing the user root access. Once jailbroken, iPhone users are able to download applications which are not available through Apple’s App Store (and which, therefore, have not been approved by Apple).  It should be noted that, as reported by Jay Yarow in the San Francisco Chronicle, Apple CEO Steve Jobs claimed at the unveiling of the iPhone 4 that Apple approves 95% of the apps it sees within 7 days.

Though jailbreaking is no longer prohibited under the DMCA's circumvention prohibitions, such activity, as Apple has previously stated, could amount to a breach of the phone owner's end user license agreement, could nullify the product warranty, could result in Apple denying service for the product, and, according to Apple, could result in "instability, disruption of services, and compromised security."  Given these potential negative consequences and the fact that Apple had apparently not actively pursued jailbreakers even prior to this decision, it remains to be seen what practical effect the decision will have for consumers. 

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